1.3 Mere Incorporation or Mere Domain Name Registration Does Not Confer Trademark Rights
That a Complainant corporation’s corporate name corresponds to a disputed name is insufficient alone to demonstrate common law trademark rights. As with any claimed common law mark, common law rights require proof of secondary meaning. Secondary meaning requires establishing that the public primarily associates the mark in question with certain goods or services originating from the purported mark holder.
As with a mere corporate name, the registration of a domain name itself does not confer any trademark rights without strong and serious evidence of common law trademark rights arising from use of the domain name. Where there is no, for example, evidence of website traffic, online sales, consumer awareness, reputation etc., there is no basis to find any trademark rights arising from Complainant’s registration.
Additional Information
Relevant Decisions
Snap! Mobile, Inc. v. Domain Manager / WEBWORKS A1 Domain Name Development and Management, Forum FA2308002059177, <snapmobile.com>, 3-member, Denied, RDNH
Although Complainant states that it was founded in 2014, the documents that it provided do not show usage of the SNAP MOBILE trademark that might qualify as trademark usage until much more recently. (Those documents showing use of the SNAP MOBILE name as Complainant’s corporate name are irrelevant here because “proof of mere registration of the company, without more, is not enough to demonstrate that the Respondent was commonly known by the domain name.” Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672.)
ABD Cosmetics GmbH v. Bah Silver, CAC-UDRP-106217 (2024), <abdcosmeticsgmbh.com>, Denied
The Complainant does not own a trademark registration for ABD Cosmetics GmbH, however, the Complainant claims that the Disputed Domain Name is identical to the Complainant ́s company “ABD Cosmetics GmbH” to which the Complainant claims trademark use rights… For the current case, the Complainant provided with only some limited evidence which cannot prove a long and continuous use of the mark and, therefore, it is impossible to confirm that the mark has become a distinctive identifier which consumers associate with the complainant’s goods and services.
Costa Rica Recovery, SA SAH Holding Company, LLC Scott A Huseby v. Ryan Rivard, CIIDRC 21459-UDRP, < costaricarecovery.com> (2023), 3-member, Transfer
The evidence submitted by the Complainants does show that the phrase has acquired some distinctiveness as both a trade name and trademark in the field of drug and alcohol treatment services. The Web archive evidence shows that the Complainant’s services have been marketed as “Costa Rica Recovery” since at least 2008. The patient testimonials from 2012 and 2018 also demonstrate that the Domain Name: costaricarecovery.com program is known to patients and others as “Costa Rica Recovery”… The Panel concludes on a balance of probabilities that the phrase ‘COSTA RICA RECOVERY” functions as a trademark or service mark, in that it identifies the Complainant Costa Rica Recovery as the source of those services and that it has acquired distinctiveness through Complainants’ use of the mark.
Paragon Protection Ltd. v. Webhosting Department/ Candev Systems Inc., CIIDRC 20348-UDRP (2023), <paragonsecurity.com>, Denied, 3-member panel
The only other evidence provided by the Complainant consists of excerpts from the Company Register of the Province of Ontario, which show the registration of the company PARAGON SECURITY LTD. and the business name PARAGON SECURITY. However, these registrations, in themselves, do not confer rights under the Policy.
Digest Commentary
- Digest Vol. 4.24 <rocketship.com>, 3-member, Denied, RDNH